Thursday, 18 April 2013

WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes

Jane Lambert

On Monday 15 April, 2013 I chaired a meeting of the monthly arbitration forum of the Irish branch of the Chartered Institute of Arbitrators. The topic was "WIPO Arbitration: Current Trends with Intellectual Property and Domain Name Disputes." The speakers were my colleague, Joseph Dalby of the 4-5 Gray's Inn Square Intellectual Property and Technology Law Group and Kate Colleary, Head of Intellectual Property and Data Protection at the Dublin office of Eversheds.

The meeting took place at the Dublin Dispute Resolution Centre which is a joint venture of the Chartered Institute of Arbitrators and the Irish Bar. It is in the Distillery Building in Church Street, a few hundred yards from the Four Courts where the superior courts sit.  According to the Centre's website:
"The centre has four rooms designed specifically for holding arbitrations, in addition to five ancillary breakout / meeting rooms. All rooms have power and data direct to tables and are furnished to an extremely high standard. In addition to high-quality meeting space, the centre can also arrange a range of other services onsite, including:
  • Videoconferencing
  • Teleconferencing
  • Stenography and transcription services
  • Translation services 
  • Catering
  • Printing / faxing / copying"
In other words, everything that one could reasonably expect for arbitration, mediation and other forms of dispute resolution.  Some idea of the facilities can be obtained from the photos above and I can say that they are even more impressive in reality.

Ireland is a good place for arbitration.  Like Scotland (but unlike England and Wales) it has incorporated the UNCITRAL Model Law into its law (see s.6 of the Irish Arbitration Act 2010).   It has also established a Commercial List within its High Court which can support commercial arbitrations including those relating to intellectual property.

In her talk, Kate discussed WIPO, its Arbitration and Mediation Centre, its dispute resolution service for generic and many country code top level domain names and the elements that a complainant must prove to obtain the transfer of a domain name and she guided us through a typical dispute.  She quipped that the 26 April, the anniversary of the implementation of the WIPO Convention ("World Intellectual Property Day") was IP practitioners' St Patrick's Day and that she and her colleagues in Eversheds around the world will arrange special events to celebrate it.   One of the countries for which the WIPO provides domain name dispute resolution services is Ireland (the whole island and not just the Republic). Joseph had helped to draw up the Irish Dispute Resolution Policy which is significantly different from the ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP"). He highlighted some of those differences in his presentation and compared the Irish Policy to Nominet Dispute Resolution Service Policy for the ".uk" space and the Czech Court of Arbitration's Rules for the ".eu" space. He also mentioned the new top level domains and the dispute resolution procedures that are shortly to be introduced by the WIPO.

There were several distinguished lawyers in the audience.  After the meeting I managed to speak to some of them including Alistair Payne, who sits with Joseph and me on the WIPO panel, and Julie Shackleton of the Irish Law Society.  Meeting Julie was particularly fortuitous because earlier in the day I had visited Cruickshanks, one of the leading firms of patent and trade mark attorneys in the Republic of Ireland, and had discussed the possibility of an intellectual property workshop in Dublin with Mary Rose O'Connor and Seamus Doherty of that firm. Julie thought that such a workshop was a great idea.   We have each mentioned it to our respective colleagues  and have found support on both sides of the Irish sea.   We have pencilled in the first quarter of 2014 for the event.

Such a workshop will be a two way learning experience for businesses and professional advisers from both countries.   We in the United Kingdom have much to learn from Ireland as well as resources and experience to share.  Despite the currency crisis and the worldwide recession there is still plenty of innovation and enterprise in the country. Cruickshanks is in the Sandyford Business Centre on the outskirts of Dublin and is just across the road from Microsoft and many other high tech companies.   I described the area in my address to the meeting as "the powerhouse of the tiger economy." Incidentally, Dublin has an excellent transport system with trams that whisked me from Sandyford to the city centre in 20 minutes and bus stops that predict accurately the arrival of buses. Though most things in Ireland seem to be more expensive than here, intellectual property services are very reasonable. Cruickshanks, for instance, offer a joint UK and Ireland patent application package for the amount in euros that many firms here would charge in pounds for just the UK.

In the morning I visited Ms Justice Laffoy's court.   I had seen her in action on my last visit to Dublin shortly after she had been appointed,   She was dealing with company cases and seemed a very agreeable tribunal.   Afterwards I lunched with James Bridgeman, another WIPO panellist and  intellectual property lawyer and arbitrator, who gave me a tour of the Law Library and a good briefing on intellectual property, the legal services market and business in Ireland.   My last view of Dublin was of the new financial district along the banks of the Liffey from the airport bus.   Financial crisis or not, there are still a lot of big names in smart modern buildings there.

In a very long day I saw most of what I had come to see and did most of the things I had hoped to do  The only exception  was the National Leprechaun Museum but one always needs an excuse to come back.   I have a client in Belfast who has invented something wonderful which I hope will lead him to a crock of gold. Maybe inventors are modern day leprechauns.

If anyone wants to discuss this article, contact Joseph for advice on Irish law or representation in the Irish courts or other tribunals or any of us for advice on intellectual property law or arbitration, please call +44 (0)20 7404 5252 or complete our contact form. Remember you can also follow us on twitter.

Thursday, 11 April 2013

World Intellectual Property Day, 26 April 2013

Jane Lambert

The World Intellectual Property Organization is the specialist UN agency for intellectual property.  It was established by the Convention Establishing the World Intellectual Property Organization ("WIPO Convention") which came into force on 26 April 1970. Ever since the anniversary has been celebrated throughout the world as World Intellectual Property Day.

The day is an opportunity to raise public awareness of intellectual property. Governments, intellectual property offices, trade associations, professional associations, patent and trade mark agencies, law firms, barristers' chambers, universities and schools around the world hold seminars, workshops, exhibitions and other events to celebrate the day.  Here are some suggestions from the WIPO as well as records of the events from previous years.

The WIPO has a special Facebook page for World Intellectual Property Day to publicize this year's events. Each year has a different theme and this year it will be "Creativity the Next Generation".

This is the first year that 4-5 Gray's Inn Square IP Group has been able to celebrate the day.   Our main contribution will be a workshop on The Patent Box in conjunction with the Liverpool Inventors Club at the offices of Jackson & Canter LLP at 88 Church Street, Liverpool, L1 3AY on Monday 29 April 2013 at 18:00.  The principal speaker will be Vince Walker, tax partner of BDO LLP.

For more information, please call us on +44 (0)20 7404  5252 or use our contact form.

World IP Day Events

Robert Gordon University, Exhibition and lecture "IP and Photographs - Recent Developments".

26 April 2013 Faculty of Advocates and Law Society of Scotland "World IP Day Conference"

29 April 2013 Liverpool Inventors Club workshop on the Patent Box, Vince Walker, BDO

24 April 2013 IPAN Lord Younger "How clear IP rights for Innovation and Brands help export-led growth"

26 April 2013   British Library: Julie Boadilla "Beginner's guide to intellectual property"

Saturday, 6 April 2013

IP Services from Barristers

Jane Lambert

Some years ago, the Intellectual Property Office published a leaflet entitled "Choosing the Right IP Adviser". It contains a lot of useful information and I recommend it. However there is one section that needs improvement and that is the one headed "IP Barristers" on page 6:
"IP barristers are likewise part of a wider profession and IP barristers give specialist advice in IP matters and conduct cases in Courts. The more experienced members of this group are generally able to provide a certain amount of business advice around IP too, although it is not normally their speciality.
Introduction to an IP Barrister will normally be through a solicitor, a patent or trade mark attorney or an accountant."
That information is incomplete, out of date and in some respects misleading.

What is a Barrister?
The Bar Council's website says:
"Barristers are specialist legal advisers and court room advocates. They are independent, objective and trained to advise clients on the strengths and weaknesses of their case. They have specialist knowledge and experience in and out of court, which can make a substantial difference to the outcome of a case."
I'd go along with that and would stress the adjectives specialistindependent and objective because therein lies our value. Those qualities enable us to advise very accurately how the law will apply to a particular situation and how best to avoid difficulties or exploit advantages.

But we have another advantage that our professional association does not mention.  Most of the judges of the High Court are drawn from our number and it is they who declare the law. As we appear regularly before those judges as advocates and were often against them when they were at the Bar we get to know how they think. That enables us to forecast how the law will develop better than anybody and that is why patent attorneys, trade mark attorneys and even the biggest law firms instruct us.

What exactly does a Barrister do?
We advise on difficult points of law, draft complex legal instruments and represent parties in hearings before courts, arbitrators and other tribunals, in negotiations and in mediation.

We do not conduct litigation (that is to say, issuing proceedings. corresponding with the court or other side, interviewing witnesses and collecting documentary or other evidence), prosecute patent, trade mark or registered design applications or manage clients' general legal business like conveying property or proving wills. Litigation is done by solicitors or, in the case of intellectual property litigator, patent or trade mark attorney litigators.  Solicitors also handle general legal business. Patent or trade mark attorneys (also known as patent or trade mark agents)  prosecute patent, trade mark and registered design applications.  

However, we often support solicitors and patent and trade mark attorney litigators in conducting litigation by advising on evidence, drafting or reviewing letters, statements of case (or pleadings), applications, orders, witness statements and affidavits and attending case management conferences and other hearings on procedural matters.

We also help solicitors manage their clients' non-contentious business by drafting letters, contracts, licences, terms and conditions and other documents.. The reason they seek our help on non-contentious matters is that our court room experience helps us to spot potential pitfalls and take steps to avoid them in time.

Similarly, we assist patent and trade mark attorneys in patent, trade mark and registered design prosecution by advising on such issues as patentability and whether there is a risk of confusion and association with an earlier mark, drafting statements of grounds, counter-statements and witness statements and appearing at hearings before hearing officers appointed by the Comptroller-General of Patents, Designs and Trade Marks  (also known as "the Comptroller", "Registrar" or "Chief Executive") in the Intellectual Property Office.

Because we are called in as and when we are needed we are often compared to consultant physicians and surgeons in medicine.

Do I really need to consult a Solicitor or other Professional to meet a Barrister?
No. That bit of the IPO leaflet is out of date and needs to be revised.

Until 2004 the only way a resident of England and Wales could consult a barrister was by asking a solicitor, patent or trade mark attorney or other professional intermediary to arrange a meeting with a barrister known as a "conference" or by sending him or her written instructions to draft a document or advise in writing.  That could be very slow and expensive and was not always satisfactory because not every solicitor or other professional intermediary knew whom to ask. 

It is now permissible for members of the public to consult barristers directly under the Public Access scheme and there are sometimes advantages in doing so, especially in respect of intellectual property. Because we are independent and objective we can advise on the optimum legal protection for a new product or business. For instance, the instinct of a patent attorney is to recommend patent protection for a new invention and in as many countries as possible. Often, that is the best advice but when the inventor is an individual, start-up or small business more nuanced advice is required. If  a client needs a patent or other registered right we can introduce him or her to a patent or trade mark attorney with exactly the right skills and experience for the job. Over the years we get to know a lot of patent and trade mark attorneys. solicitors and other professionals.   We quickly learn who is good at one type of work and who is good at another.

We meet a lot of people in our work who would be useful to a new business such as angels, business mentors, chartered accountants, foreign lawyers, product design consultants, specialist insurance brokers and venture capital fund managers.  We can put clients in touch with them.

Of course, it is still possible to come to us through a solicitor, patent or trade mark attorney or other professional intermediary and that is often the best way to approach us because a good solicitor or other intermediary will know the Bar and formulate precisely the question on which he or she needs advice.  But you should be aware of public and licensed access for those cases when the intervention of a solicitor, patent or trade mark attorney or other professional intermediary is unnecessary.

How to choose a Barrister
According to the Bar Council there are over 15,000 barristers. Theoretically any of us can do any type of work but in practice we tend to specialize in one or more fields.   There are a large number of barristers who include intellectual property work in a broader practice and there are some instances where that is an advantage but there are others, such as I, who do intellectual property and technology work and virtually nothing else. 

The expression "horses for courses" is very apt when choosing a barrister. Always bear in mind that legal issues do not always fit neatly into specific categories unlike exam questions. Sometimes, an intellectual property question arises in a commercial transaction such as the sale of a business or the winding up of a company. In those circumstances you choose a barrister with knowledge and experience of the main issues who also knows about intellectual property. However, where the matter turns on a specific issue such as whether an invention is a computer program as such it is better to find a patent specialist with experience of computer law.

Most barristers practise in groups known as "chambers".  These are not partnerships or companies but associations of barristers who club together to rent or buy office space, employ clerks, chambers administrators and other staff and acquire books, furniture and equipment.   Some chambers specialize in intellectual property.   Others, such as ours, have intellectual property departments consisting of practitioners who practise intellectual property either exclusively or as part of a wider chancery, commercial or entertainments law practice. Yet others are general chancery or commercial sets whose members include intellectual property in a wider practice.

You can get some idea of what a barrister can do by looking at his or her website.    Check out the cases in which he or she has appeared, the books and articles he or she has written, the presentations he or she has given, whether he or she keeps a blog on the relevant area of law and so on.  See whether he or she has been in the court or tribunal before which you or your client need representation recently, or whether he or she has written anything about the point of law on which you need advice or the document you need drafting. You can also get some information from his or her clerk and you can always give the barrister a ring or send him or her an email.

About 4-5 Gray's Inn Square
Although Richard Spearman QC was in a number of important cases on breach of confidence, copyright and other matters it is probably fair to say that our chambers was better known for administrative, commercial law and planning than intellectual property. However, that is about to change.   We now have a strong team of IP practitioners with expertise in all areas including patents, trade marks and registered designs.  We have members who live in Wales, Ireland and the North of England so we can see you in conference or appear in court anywhere in England and Wales at very short notice.  Very useful when making or responding to a search order, freezing injunction or other "without notice" application.   

If you need further information about our members or their services call our clerk on +44 (0)20 7404 5252 or get in touch through our contact form..